Ex Parte Hopson et al

Board of Patent Appeals and Interferences

Jun 23, 2009

10201757 (B.P.A.I. Jun. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL W. HOPSON and RICHARD L. SEIDEL
____________________

Appeal 2009-002224
Application 10/201,757
Technology Center 3600
____________________

Decided:1 June 23, 2009
____________________

Before WILLIAM F. PATE, III, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 (2008), begins to run from the
Decided Date shown on this page of the decision. The time period does not
run from the Mail Date (paper delivery) or the Notification Date (electronic
delivery).

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Application 10/201,757

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STATEMENT OF THE CASE 1
The Appellants appeal under 35 U.S.C. § 134 (2002) from the 2
Examiner’s decision finally rejecting claims 1-9 under 35 U.S.C. § 103(a) 3
(2002) as being unpatentable over Girguis (US 4,325,232, issued Apr. 20, 4
1982) and Hayama (US 6,280,338 B1, issued Aug. 28, 2001); and finally 5
rejecting claims 11-18 and 20-27 under 35 U.S.C. § 102(b) (2002) as being 6
anticipated by Girguis. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 7
We sustain the rejections of claims 1, 5-9, 11, 15-18, 20 and 24-27. 8
We do not sustain the rejections of claims 2-4, 12-14 and 21-23. 9
The claims on appeal relate to adding an angle-limiting ring to an 10
interconnecting shaft between the inner race and the inner end of the shaft 11
prior to assembling the shaft into the inner race of a ball-type constant 12
velocity joint. The angle-limiting ring prevents the joint from articulating 13
past a predetermined angle by coming into contact with the ball bearings in 14
the joint at the predetermined angle. (See Spec. 3, ¶¶ 0012 and 0015). 15
Claim 11 is typical of the claims on appeal: 16
17
11. A fixed ball type outer constant 18
velocity joint assembly of a driving axle for use in 19
a rear wheel drive system comprising: 20
an outer race having an inner region; 21
an inner race substantially coupled within 22
said inner region; 23
a plurality of ball bearings positioned 24
between said outer race and said inner race; 25
a cage used to position each of said plurality 26
of ball bearings; 27
an interconnecting shaft coupled to said 28
inner race; and 29
an angle-limiting ring coupled to said 30
interconnecting shaft, wherein said angle-limiting 31
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ring is capable of limiting the articulation of said 1
interconnecting shaft to a first angle relative to a 2
centerline during assembly or disassembly of the 3
driving axle from the rear wheel drive system, said 4
centerline being defined as extending 5
longitudinally along symmetrical length and 6
through said outer race. 7
8
Claims 1, 11 and 20 are independent. The remaining claims depend 9
ultimately from either claim 1, claim 11 or claim 20. Claims 1, 11 and 20 10
each recite an angle-limiting ring coupled to an interconnecting shaft. The 11
angle-limiting ring of claims 1, 11 and 20 is capable of limiting the 12
articulation of the interconnecting shaft to a first angle relative to a 13
centerline. Not one of claims 1, 11 and 20 recites the measure of the first 14
angle. Claims 2, 12 and 21 recite that the first angle is approximately 15
between 15° and 40° relative to the centerline. Claims 3, 13 and 22 recite 16
that the first angle is approximately 30° relative to the centerline. Claims 4, 17
14 and 23 depend from claims 2, 12 and 21, respectively. 18
19
ISSUES 20
The Examiner finds that Figure 5 of Girguis shows a constant velocity 21
[“CV”] joint including an angle-limiting ring. (Ans. 5). The Examiner finds 22
that this angle-limiting ring of Girguis functions in the same manner that the 23
preferred angle-limiting ring described in the Appellants’ Specification 24
functions. (Ans. 8). 25
The Appellants contend that the component of Girguis’ CV joint 26
assembly which the Examiner identifies as an angle-limiting ring is not 27
inherently capable of functioning as an angle-limiting ring. (App. Br. 5-6, 28
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12 and 16). The Appellants further contend that Girguis and Hayama would 1
not have taught or suggested a driving axle having CV joint assembly 2
including an angle-limiting ring as recited in claim 1. (App. Br. 7). The 3
Appellants do not appear to contest the Examiner’s conclusion (see Ans. 3) 4
that Girguis and Hayama would have provided one of ordinary skill in the 5
art reason to combine Girguis’ CV joint in a driving axle with a plunging 6
type inner CV joint assembly and an interconnecting shaft coupled between 7
the two CV joints. 8
This appeal turns on two issues: 9
Have the Appellants shown that the Examiner erred in 10
finding that Girguis discloses an angle-limiting ring capable of 11
limiting the articulation of an interconnecting shaft to a first 12
angle relative to a centerline? 13
Have the Appellants shown that the Examiner erred in 14
finding that Girguis discloses an angle-limiting ring capable of 15
limiting the articulation of an interconnecting shaft to a first 16
angle approximately between 15° and 40° relative to a 17
centerline? 18
19
FINDINGS OF FACT 20
The record supports the following findings of fact (“FF”) by a 21
preponderance of the evidence. 22
1. Girguis discloses a constant velocity [“CV”] universal joint 23
including a hollow outer joint body 1; an inner joint body 5 located within a 24
hollow 2 in the outer joint body 1; balls 13 located within ball grooves 4 on 25
the inner surface of the outer joint body 1 and ball grooves 7 on the outer 26
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surface of the inner joint body 5; and a cage 10 located between the outer 1
and inner joint bodies 1, 5 to contain the balls 13 within windows 15. 2
(Girguis, col. 5, ll. 1-10). 3
2. Figure 5 of Girguis appears to depict an interconnecting shaft 4
(no reference numeral) splined to the inner joint body 5. 5
3. Figure 5 further depicts an approximately frusto-conical ring 6
(no reference numeral) mounted on the interconnected shaft abutting the 7
inner joint body 5. 8
4. During prosecution, the Appellants submitted an affidavit 9
executed by Richard Seidel [“Seidel”], a named inventor. (Affidavit Under 10
37 C.F.R. 1.132, filed Mar. 29, 2004 [“Affidavit” or “Aff.”]). 11
5. Seidel states in the Affidavit that he reviewed VOLKSWAGEN 12
PASSAT and GOLF products. (Aff. 2, ¶ 5). Seidel further states that Seidel 13
observed the use of “the teaching of the Girguis disclosure” in those 14
products. (Id.) 15
6. Seidel states in paragraph 5 of the Affidavit that Seidel 16
observed a rubber piece corresponding to the frusto-conical ring shown in 17
Figure 5 of Girguis. (Aff. 2, ¶ 5). 18
7. Seidel states in paragraph 5 of the Affidavit that this rubber 19
piece does not limit articulation (that is, angular movement) of the 20
interconnecting shaft. (Id.) 21
8. Seidel states in paragraph 4 of the Affidavit that “the shape of 22
the rubber element (KK) allows for the ball movement to achieve joint 23
articulation of up to 46 degrees.” (Aff. 2, ¶ 4). 24
9. Seidel states in the Affidavit the opinion that the purpose of the 25
rubber piece is to damp or eliminate vibration, and that the piece is not 26
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designed to limit articulation of the interconnecting shaft. (Seidel 2, ¶¶ 4 1
and 6). 2
3
PRINCIPLES OF LAW 4
A claim under examination is given its broadest reasonable 5
interpretation consistent with the underlying specification. In re Am. Acad. 6
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of 7
an express definition of a claim term in the specification, the claim term is 8
given its broadest reasonable meaning in its ordinary usage as the term 9
would be understood by one of ordinary skill in the art. In re ICON Health 10
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Morris, 127 11
F.3d 1048, 1054 (Fed. Cir. 1997). Limitations not explicit or inherent in the 12
language of a claim cannot be imported from the specification. E-Pass 13
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). 14
“To anticipate a claim, a prior art reference must disclose every 15
limitation of the claimed invention, either explicitly or inherently.” In re 16
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). A feature or property is 17
inherent in the subject matter disclosed by a reference only if one of ordinary 18
skill in the art would recognize that the feature or property is necessarily 19
present in the subject matter. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 20
1999). Where an examiner has reason to believe that the subject matter 21
disclosed by a reference necessarily possesses the capability of performing a 22
recited function, however, the burden shifts to the applicant to come forward 23
with evidence rebutting the examiner’s belief. Schreiber, 128 F.3d at 1478. 24
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ANALYSIS 1
The Appellants do not define the term “angle-limiting ring” in the 2
Specification. Since a CV joint typically will have multiple parts which 3
might fall within the ordinary usage of the term “ring,” the term “angle-4
limiting ring” necessarily limits the structure on which it reads in terms of 5
function. The language common to claims 1, 11 and 20 supplies the 6
function which the “angle-limiting ring” must be capable of performing, 7
namely, limiting the articulation of the interconnecting shaft to a first angle 8
relative to a centerline. 9
A preponderance of the evidence supports the Examiner’s finding that 10
the frusto-conical part disclosed in Girguis is an angle-limiting ring, that is, 11
that the part is capable of limiting the articulation of the interconnecting 12
shaft to a first angle of up to 46° relative to a centerline. The probative 13
value of the shape and position of the frusto-conical part as shown in Figure 14
5 of Girguis, which the Examiner identifies (see Ans. 4 and 8) as an angle-15
limiting ring, relative to the positions of the balls 13 and the interconnecting 16
shaft; and the probative value of Seidel’s statement in paragraph 4 of the 17
Affidavit that the shape of the frusto-conical ring allows the ball movement 18
of a joint of the type depicted in Figure 5 of Girguis to achieve joint 19
articulation of up to 46° (see FF 8), outweigh the probative value of Seidel’s 20
statement in paragraph 5 of the Affidavit that this ring, as observed in the 21
VOLKSWAGEN PASSAT and GOLF products, does not limit articulation 22
of the interconnecting shaft (see FF 7). 23
Seidel’s statement in paragraph 5 of the Affidavit that this ring, as 24
observed in the VOLKSWAGEN PASSAT and GOLF products, does not 25
limit articulation of the interconnecting shaft may mean no more than that 26
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the frusto-conical ring is not provided for the purpose of limiting articulation 1
of an interconnecting shaft. (See also FF 9). Since the Appellants cannot 2
avoid anticipation merely by reciting an arguably new use that they intend 3
the known frusto-conical part to perform, See Schreiber, 128 F.3d at 1477, 4
the latter statement is entitled to little evidentiary weight. 5
On the other hand, Figure 5 of Girguis does not support the 6
Examiner’s finding that the frusto-conical ring shown in the drawing figure 7
is capable of limiting the articulation of an interconnecting shaft to a first 8
angle approximately between 15° and 40° relative to a centerline. In view of 9
Seidel’s statements that Seidel reviewed VOLKSWAGEN PASSAT and 10
GOLF products; that Seidel observed the use of “the teaching of the Girguis 11
disclosure” in those products; that Seidel observed a rubber piece 12
corresponding to the frusto-conical ring shown in Figure 5 of Girguis; and 13
that the shape of the rubber piece allows for the ball movement to achieve 14
joint articulation of up to 46° (FF 5, 6 and 8), a preponderance of the 15
evidence does not support the Examiner’s finding that the frusto-conical ring 16
is an angle-limiting member capable of limiting the articulation of an 17
interconnecting shaft to a first angle approximately between 15° and 40° 18
relative to a centerline. 19
20
CONCLUSIONS 21
The Appellants have not shown that the Examiner erred in finding that 22
Girguis discloses an angle-limiting ring capable of limiting the articulation 23
of an interconnecting shaft to a first angle relative to a centerline. Therefore, 24
the Appellants have not shown that the Examiner erred in rejecting claims 25
11, 15-18, 20 and 24-27 under § 102(b) as being anticipated by Girguis. 26
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The Appellants do not appear to contest the Examiner’s conclusion 1
that Girguis and Hayama would have provided one of ordinary skill in the 2
art reason to combine Girguis’ CV joint in a driving axle with a plunging 3
type inner CV joint assembly and an interconnecting shaft coupled between 4
the two CV joints. Therefore, the Appellants have not shown that the 5
Examiner erred in rejecting claims 1 and 5-9 under § 103(a) as being 6
unpatentable over Girguis and Hayama. 7
The Appellants have shown that the Examiner erred in finding that 8
Girguis discloses an angle-limiting ring capable of limiting the articulation 9
of an interconnecting shaft to a first angle approximately between 15° and 10
40° relative to a centerline. Therefore, the Appellants have shown that the 11
Examiner erred in rejecting claims 12-14 and 21-23 under § 102(b) as being 12
anticipated by Girguis. Since the Examiner articulates no reasoning other 13
than this erroneous finding to support the conclusion that the subject matter 14
of claims 2-4 would have been obvious from Girguis and Hayama, the 15
Appellants have shown that the Examiner erred in rejecting claims 2-4 under 16
§ 103(a) as being unpatentable over Girguis and Hayama. 17
18
DECISION 19
We AFFIRM the rejections of claims 1, 5-9, 11, 15-18, 20 and 24-27. 20
We REVERSE the rejections of claims 2-4, 12-14 and 21-23. 21
No time period for taking any subsequent action in connection with 22
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 23
§ 1.136(a)(1)(iv) (2007). 24
25
AFFIRMED-IN-PART 26
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